IP: Trademark by analogy problematic for spendology

Is a social media presence alone enough to create protectable trademark rights? Not so, says the U.S. Patent and Trademark Office's Trademark Trial and Appeal Board (TTAB).

To prove trademark infringement or to win an opposition, a plaintiff or opposer must prove two things: that it used the infringed mark first, and that the defendant’s use of the mark is likely to cause confusion with its own. But proving prior use can be a tenuous argument if the instance of such use is but a social media presence, not manifestly linked to the services of an entity.

The Lanham Act § 2(d) states that a mark cannot be registered if it is confusingly similar to either a registered one or to one previously used in the United States by another and that has not been abandoned. In USPTO oppositions and cancellations, some form of pre-sales activity can constitute trademark use sufficient to establish priority so as to prevent registration of a mark to another who was first to actually sell goods under the mark. Though not strictly trademark use on a product that is sold, this is called a use “analogous to trademark use.”

In previous decisions, the TTAB has explained that key to finding use analogous to trademark use is that any such pre-sales activity must have been of such a nature and extent as to create an association in the mind of the consuming public between the mark and the services to be rendered.

To briefly recapitulate the facts in PNC v. Ashe: both the applicant and the opposer used the identical mark SPENDOLOGY, the former in connection with a financial website and the latter in connection with an online budgeting tool. Via cross-motions for summary judgment, the parties essentially agreed that confusion between the marks was likely. The only issue was which party could prove the earliest trademark rights.

The applicant claimed constructive first use as of Oct. 25, 2011, the filing date of the applicant’s federal service mark application. The opposer’s evidence established a first use date of Aug. 26, 2010. In response, the applicant attempted to prove an earlier first use date based on alleged "use analogous to trademark use." To support this argument, the applicant offered as evidence its having joined Twitter and its tweets about its mark, its creation of a Facebook page, and its blogging about its mark.

In its non-precedential ruling in PNC v. Ashe, the TTAB conformed to prior precedent and explained that it may infer the fact of identification of the mark with the party on the basis of indirect evidence regarding the party’s use of the word or phrase in advertising brochures, catalogs, newspaper advertisements, articles in newspapers, trade publications and Internet websites that create a public awareness of the designation as a trademark identifying the party as a source.

But in PNC v. Ashe, the TTAB felt that the applicant did not meet this burden. Instead, it held that the acts of joining Twitter and Facebook did not by themselves establish use analogous to trademark use. In addition, the Board felt that the lack of declaration testimony regarding the extent of consumer exposure to the applicant's blog posts, Twitter page, tweets, or Facebook page further supported its denial of trademark rights. Moreover, the Board felt that the fact that the applicant’s Twitter page, Facebook page, and blog postings did not refer to the applicant's services further weakened its case.

Ultimately, because the Board was not convinced by the applicant’s evidence based on social media use, the Board held that the earliest date upon which the applicant could rely was his filing date of Oct. 25, 2011 — a date that of course post-dated that of the opposer.

With today’s emphasis on social media, one might argue that registering a mark with various social media sites, and tweeting, and creating a Facebook page could easily link such mark with the offered services. But might the Board’s recent opinion in the Spendology case signal that a heightened level of scrutiny will be applied going forward on evidence of use analogous to trademark use? Perhaps this is as easy to explain in PNC v. Ashe, since the applicant failed to reference its services directly on its various social media sites.

One thing it is safe to assume: If you're relying on use analogous to trademark use, be as explicit as possible in linking your mark to your services, whether in a catalog or showroom — or on Twitter, Facebook and your blog.

Contributing Author

Scott Slavick

Scott Slavick is a shareholder at Brinks Gilson & Lione, where his practice focuses primarily on trademark prosecution and trademark litigation. Scott maintains all aspects...